En Banc Federal Circuit Rules IPR Time-Bar Determinations Are Appealable

The Federal Circuit recently issued its decision in Wi-Fi One v. Broadcom, ruling that the time-bar determinations for instituting inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB) are appealable. Managing Intellectual Property contacted Finnegan attorney Joshua Goldberg for his thoughts on the decision. 

Josh said, "Now that the Federal Circuit has taken the view that it has the authority to review these time-bar types of determinations, hopefully we will get some more clarity there. There are different panels taking different views on when service exists and when it doesn’t."

He also notes that the decision may impact issues around other PTAB proceedings being reviewable, such as estoppel provisions. The PTAB sometimes denies petitions on estoppel grounds because the petitioner has filed an earlier petition, or because they are related to someone who is estopped from an earlier case. He said, "Those are the types of things that I think now are probably going to be viewed as reviewable. They are coming up in that same Section 315 area that is dealing with how the different cases relate to each other when you have got multiple proceedings in different places."

Other PTAB proceedings that this case may impact are post-grant reviews and covered business method (CBM) reviews. While these types of petitions don't have the time-bar that IPRs do, they face a similar level of uncertainty as it relates to declaratory judgment (DJ). Goldberg said, "If you have a DJ action that is dismissed without prejudice, there are some panels that would say well that is fine, now you can bring a CBM. But other panels would look at it and say it depends if you are in the same legal position or not. So I would expect that type of DJ issue in the CBM world would also become reviewable in the same way this time bar is also reviewable."